Mexico: Patent Litigation In Mexico

Patent litigation in Mexico is a relatively new field of
practice for Mexican attorneys. With amendments to the Industrial
Property Law which introduced the concept of damages for
infringement of Industrial Property rights, and which entered into
effect in 1994 and with Mexico's joining the Patent Cooperation
Treaty (PCT) as from January 1995, the basis for patent litigation
in our country were established.

As of today, the number of cases for patent infringement tried
with the Mexican Patent Office is still relatively low, especially
when compared to cases involving trademarks. As a result, we still
face some inconsistencies during the process and, more importantly,
in claim interpretation and in substantive issues such as novelty,
inventive step and obviousness. Furthermore, very few cases have
reached all the way to the appeal level and thus, the Courts are
yet to produce rulings giving a clearer degree of certainty, in as
much as how these concepts are to be interpreted. While the law
certainly contains definitions for these concepts, the complexity
of most patent cases more often than not requires additional
guidelines on how to interpret them.

The process in itself is quite different to those held in the
United States, Canada or Europe. To begin with, all claims for
infringement are to be tried with the Mexican Patent Office, which
renders the cases to be administrative processes rather than
judicial instances. Decisions rendered by the Mexican Patent Office
will only rule on whether the infringement took place or not and,
in a declarative type of decision, the defendant will be ordered to
immediately stop the infringing activity and will also be fined.
Fines for patent infringement cases can go as high as US
$85,000.00, although the Mexican Patent Office has hardly ever
applied the maximum penalty.

It is to note that there is no discovery period under applicable
law. Therefore, the attorney for the plaintiff is to thoroughly
prepare the case before the initial pleading is filed, without
being able to avail, at this stage, on information or documents in
the exclusive possession of the defendant. The claim for
infringement contained in the initial pleading of the case can not
be amended once filed. However, it is to include all argument and
evidence in which the case is supported, whether it be documentary
evidence, expert testimony, official inspections or documents in
the possession of the defendant which would be relevant to the case
and which the Mexican Patent Office can order the defendant to
produce.

As noted above, all evidence is to be included with the initial
pleading. The only exception to this rule for the plaintiff is for
the case of documentary evidence which may be in the exclusive
possession of the defendant and that, once offered, the Mexican
Patent Office deems it relevant to the case. Then, the Mexican
Patent Office would request said documentary evidence be produced
by the defendant, under the warning that if the same is not
produced as ordered, the allegations of the plaintiff made in
connection with the respective documents will be taken as proven.
While there are certainly some concerns over the legality of this
rule under Constitutional rights, the Courts are yet to produce
applicable case law under which to avail of a clearer position.

Expert testimony is quite common and actually needed on most
patent litigation in Mexico as well. However, the process for
rendering the same is rather unique in our country. The party
offering said means of proof is to provide a questionnaire on the
issues to be covered by its appointed Expert. Then, the other party
will have the right to add the questionnaire with those questions
it deems appropriate, and will also have the right to appoint its
own Expert to cover the same issues. Once confirmed by the Mexican
Patent Office, if objections raised by the parties against the
admission of a given Expert are overruled, they are called by the
Patent Office to produce their testimony in writing, normally
within the twenty days following the specific official request.

As it is frequently the case, the testimony of Experts happens
to be conflicting and thus, the Mexican Patent Office is left with
no choice but to appoint a third and final Expert, which is to
respond to the questionnaires originally submitted by the parties.
This third Expert is to produce its testimony in writing as well,
within the twenty days following the service of the appointment
confirmation.

The results of an official visit of inspection is also used as a
form of evidence in many patent infringement cases. This particular
type of evidence is used to demonstrate that the alleged infringing
product is on the market; that the defendant manufactures and / or
markets the noted product, and to obtain a sample of the alleged
infringing product so that it can be examined by the Experts and by
the Patent Office, in order to determine if the claims of the
respective patent are being infringed or not. On a different
matter, the inspection visit is also used to implement seizure
measures, of which a detailed reference will be made latter.

Now, once the claim has been admitted by the Mexican Patent
Office, together with the evidence offered by the plaintiff,
service of the same on the defendant is ordered. If inspection
visits were offered as part of the evidence, the same are to take
place precisely on the date of service of the claim, even if the
facilities of the defendant were also chosen for an inspection
visit. It is quite relevant to point out that the inspections are
to take place without any prior notice to the defendant or to the
places where said inspections are to take place, leaving the
visited entities, among which the defendant is normally included,
without any time whatsoever to prepare for such visits. Inspections
are made by an official Inspector appointed by the Mexican Patent
Office, who can be accompanied by a representative of the
plaintiff. An official report is to be prepared by the Inspector
for each visit, so that it is introduced into the case as the
result of the Inspection visit offered as evidence. The visited
entity has the right to make observations, comments and objections
to the inspection visit, either during the visit itself or within
the ten days following the same, and those are also introduced in
the case file for proper consideration by the Patent Office.

The defendant is then given a non-extendable term to produce a
response to the infringement claim of one month. Any counter claim
of interest by the defendant will also need to be instituted within
this term of one month, again, with no extensions available.
Nullity claims instituted by the defendant after the one month
period granted to respond, will not be deemed linked to the process
and thus, the claim for infringement may very well be decided upon
before the nullity case is decided, and without taking the same
into consideration. The defendant is also to produce all argument
and evidence (documentary evidence, inspection visits, Expert
testimony, etc.) in support of its defense, within the month
granted. The only exception to this rule is found for documents
offered by the defendant in its response, which are not located in
Mexico. On these cases, the Mexican Patent Office will grant a
further term, which in practice is of approximately two more
months, by which the respective documents are to be produced.
Failure to meet this new term, for which no further extensions are
available under the law, will result in the respective evidence
being withdrawn from the case and thus, not to be taken into
consideration.

Once the defendant produces its response and all evidence
offered by the parties has been completed, the case is closed and
ready for a decision be rendered. Then, the parties are simply to
wait for the Mexican Patent Office to render its decision, although
the law does not provide for any specific time frame or schedule by
which said decisions are to be made available. Therefore, even in
the case of a completed process, a decision from the Patent Office
may very well still take one year to be released.

Notwithstanding the above, it is to note that the first stages
of the process are rather quick, as the parties are left with very
little time to cover the different instances. For instance, once
the initial pleading is filed, it will normally take the Mexican
Patent Office approximately five weeks to admit the claim and to
order the same be served on the defendant. Once the claim is
served, the defendant has a non-extendable term of one month to
produce its complete response, counter claims and other validity
issues included. Therefore, the parties usually end up disclosing
their complete strategy within four months from the filing of the
initial pleading, on average, which can certainly mean some
advantages if the same type of enforcement is foreseen on other
jurisdictions, most of which have very different and prolonged time
frames to consider.

Injunctions are not available under Mexican law, at least in the
form known in other jurisdictions. For instance, no Judge in Mexico
can award such a measure and thus, we are left with the figure of
provisional measures on Industrial Property cases, as contained in
the Industrial Property Law, which are authorized by the Mexican
Patent and Trademark Office.

The law provides for two different forms of provisional
measures, namely, the seizure of the alleged infringing goods which
is accomplished during the course of an inspection visit, and an
order issued by the Mexican Patent Office under which the defendant
is to immediately cease the alleged infringing activity.

Both forms of provisional measures are to be supported by
posting appropriate bonds, with which to guarantee potential
damages to the defendant. Bonds for the seizure of goods are
normally of a token value to begin with and can be increased by the
Patent Office to meet the value of the goods seized. Bonds to
obtain an order to cease all infringing activity are to cover a
much more significant amount, since the defendant will be forced to
cease manufacture and / or distribution of its products, as from
the issuance of the order.

At any rate, and contrary to judgements awarding injunctions in
other jurisdictions, there is a relatively simple means to lift the
provisional measures awarded by the Mexican Patent Office. Under
the law, defendants wishing to lift the measures imposed, will only
need to post counter bond, for twice the amount of the original
bond posted by the plaintiff. Therefore, it is of the major
importance, especially for orders to cease all infringing activity,
to carefully determine the amount of bond that will most likely
guarantee that the defendant will not counter bond and thus, to
insure that the awarded measures stay in place while the case is
being tried. It is essential to note that there is no remedy or
recourse available against the defendant placing counter bond to
lift measures and thus, it may end up able to continue with the
infringement activity for the time it may take to obtain a decision
from the Patent Office.

Finally, it is to note that damages, as noted before, are not
awarded by the Mexican Patent Office with its decisions on
infringement cases. Once a declaration of infringement is obtained
from the Mexican Patent Office and when it becomes firm, the
plaintiff will have the right to seek damages be awarded through a
civil case. According to applicable provisions included in the
Industrial Property Law, damages are to be awarded to the plaintiff
for an amount of at least 40% of the market value of sales of the
infringing goods. Sales made while the case was being tried are to
be considered by the Civil Judge, even if these were made having
posted counter bond to lift provisional measures. It is very
important to note that provisional measures do not constitute an
authorization to the defendant and thus, it will certainly be
liable for damages if found to have infringed the given patent, for
all the time the infringement took place, regardless of having sold
infringing products by having placed a counter bond.

There are certainly many specific scenarios and instances not
covered in this brief summary and thus, I will be very pleased to
provide further detail and comment on any specific issues of
interest, at your convenience.

The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.

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The highest Brazilian federal court for non-constitutional matters has decided that a patent will not be revoked if, after failing to pay the applicable annual fees, the patent owner resumes paying these fees in subsequent years.

In accordance with the Mexican
Patent and Trademark Law in Mexico, in order to maintain patent,
industrial design, and utility model registrations in force through
their life terms, the payment of maintenance fees is necessary.

Current Intellectual Property Law No. 9,279 of May 14, 1996 and the TRIPS (Trade-Related Aspects of Intellectual Property Rights) Agreement allow for patenting of pharmaceuticals in Brazil. Notwithstanding, in 2001, the Brazilian IP Law was amended and the prosecution of pharmaceutical patent applications changed substantially.

This year 2011 the Patent’s System in Mexico has been mainly characterized by two major events: a) the designation of a new General Director of the "Instituto Mexicano de la Propiedad Industrial" (IMPI in Spanish); and, b) the entrance of the IMPI to the Patent Prosecution Highway Pilot Program (PPH).

As a result of the entry into force of the Agreement on
Trade-Related Aspects of Intellectual Property Rights
(TRIPS) within the framework of the World
Trade Organization (WTO) in 1995, Argentina began to amend its
legislation on enforcement of intellectual property rights (IPR) in
order to adapt them to the standards therein contained.

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